Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
This Office Action fully acknowledges applicant’s remarks filed 02/03/2026. Claims 11-16 are pending.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1. Claims 1-8 are rejected under 35 USC 103 as being unpatentable over U.S. Patent Application Publication No. 2009/0004063 to Higashihara et al. in view of U.S. Patent Application Publication No. 2018/0238923 to Abe et al. and U.S. Patent No. 9,687,841 to Hofmann.
Higashihara et al. teaches a robotic workstation includes apparatus for actuating one or more syringes.
The robot 27 includes arms that are movable along a horizontal track 401 corresponding to the X axis. Higashihara et al. teaches that the number of arms may vary, e.g., one, two or three. [0065] Thus providing for first, second, etc. arm that read on first and second Z-rods.
The arms are moved in a conventional manner in X- and Y-directions as well as allowing the syringes to move up and down in the z-direction. [0064] Users control the robot using a robotic control system (not shown), which typically includes software for both protocol development and execution). [0065]
Higashihara et al. teaches syringes, but not pipettes.
Abe et al. teaches a robot configured to move a dispenser for suctioning a liquid to be dispensed. (Abstract). Abe further teaches that pipettes and syringes are equivalent means to such and dispense liquids. [0044].
Therefore, Higashihara et al. in view of Abe et al. renders the use of pipettes equivalent to the use of syringes in Higashihara.
It would have been obvious to one having ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al, to use pipettes as a simple substitution of one known equivalent liquid dispenser for another. (MPEP 2143(I)(B))
Higashihara et al. does not teach receiving by said second Z-rod a tool via an adapter attached to said second Z-rod, wherein said tool comprises a central axis and a working area, said working area being defined by a circle which center is located on the central axis of said tool and which radius being a distance between said central axis and a largest extension of an outline of the tool in a projection.
Hofmann teaches a pipetting positioning system that, as shown in Fig. 3D includes a centering device 14 provided with pipette needle 4, which centering device has four centering fingers 26 mutually opposing one another in pairs on its bottom side of the centering device, so that the centering fingers 26 are distributed uniformly over the periphery of the centering device 14. (column 10, lines 50-55). The centering device of Hofmann includes a central axis and a working area, the working area being defined by a circle which center is located on the central axis of the tool and the radius being a distance between said central axis and a largest extension of an outline of the tool in a projection.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al. in view of Abe et al. to includes a centering device (“tool”) on each of the first, second, etc. arms (Z-rods) as taught by Hofmann to contact the containers of Higashihara et al, to ensure proper alignment with the pipettes. Providing the centering devices on each arm would read on a first arm of Z-rod having a fixed tip (or the pipette) and a second arm or Z-rod having the centering device.
Moving the tool together with pipettes in Higashihara et al. to least partially overlap a “target” container would have been obvious.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to traverse first and second arms (Z-rods) such that the Z-axis of a first arm (Z-rod) and the working area of the respective centering device, as viewed in longitudinal direction of a first arm (Z-rod), at least partially overlaps a target area (container) comprised by a container operable by means a second arm (Z-rod) and operating the container by means of the tip of the fixed tip or the disposable tip of the first arm (Z-rod) as recited in the alternative method of claim 1.
Higashihara et al. in view of Abe et al. and Hofmann does not teach putting the centering device (“tool”) aside by the second Z-rod onto a docketing station.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al. in view of Abe et al. and Hofmann. to put the centering device aside by a second Z-rod onto a docketing station, when exchanging the contact member for a clean contact member or one of a different size.
I.) Regarding applicant’s claim 1, as noted above Higashihara et al. in view of Abe et al. and Hofmann teach all the elements of claim 1.
Therefore, Higashihara et al. in view of Abe et al. and Belz et al. renders claim 1 obvious.
II.) Regarding applicant’s claim 2, as noted above Higashihara et al. in view of Abe et al. and Belz et al. renders claim 1 obvious from which claim 2 depends.
Claim 2 recites that tool is a downholding means.
Hofmann teaches that the conical bevels 34 of the centering device form together a holding-down device for a sample vessel. (column 11, lines 9-11)
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to include the conical bevel of Hofmann in the modified apparatus of Higashihara, et al. in order to hold down the sample vessel into or from which the pipette is moving fluid in order to provide for accurate dispensing and aspiration.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 2 obvious.
III.) Regarding applicant’s claim 3, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 2 obvious from which claim 3 depends.
Claim 3 recites that operating on the target comprises abutting the target from above by means of the downholding means such to fix the target in relation to the worktable.
The centering device of Hofmann is interpreted as a downholding means that abuts and “fixes” a container in relationship to a worktable inasmuch as the contact member contacts the rim of a container.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 3 obvious.
IV.) Regarding applicant’s claim 4, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 2 obvious from which claim 4 depends.
Claim 4 recites piercing a membrane comprised by the target from above by means of the fixed tip, and introducing the fixed tip at least partially into the target via the piercing, and aspirating or dispensing liquid from or rather into the target via the fixed tip.
Hofmann teaches that a free end 32 of the auxiliary cannula 18 can pierce a septum 70 (“membrane”) of the sample vessel 52 as shown in Fig. 4C while the centering device contacts the vessel. (column 12, lines 42-46).
It would have been obvious to one or ordinary skill in the art before applicant’s effective filing date to include the piercing cannula of Hofmann in Higashihara et al. in view of Abe et al. to enable piercing of membranes on containers.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 4 obvious.
V.) Regarding applicant’s claim 5, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 4 obvious from which claim 5 depends.
Claim 5 recites withdrawing the fixed tip from the target via the piercing while still abutting the target from above by means of the downholding means.
Hofmann teaches that the piercing noted above is performed while the centering device (“downholding means”) is abutting the container.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 5 obvious.
VI.) Regarding applicant’s claim 6, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 1 obvious from which claim 6 depends.
Claim 6 recites that the piercing means comprises a central opening.
In Hofmann the piercing means is a cannula which would have a central opening.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara, et al. in view of Abe, et al. to provide a pipette tip capable of piercing in view of the teachings of Hofmann. Such would allow for piercing a membrane sealing the wells to prevent crosstalk and carryover of fluid.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 6 obvious.
VII.) Regarding applicant’s claim 7, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 6 obvious from which claim 7 depends.
Claim 7 recites that operating on the target comprises piercing a membrane comprised by the target from above by means of the piercing means such to provide the membrane with an opening.
In Higashihara et al. in view of Abe et al. and Hofmann, piercing the septum (“membrane”) would provide the septum (“membrane”) with an opening.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 7 obvious.
VIII.) Regarding applicant’s claim 8, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 7 obvious from which claim 8 depends.
Claim 8 recites introducing the disposable tip or fixed tip at least partially into the target via the opening or via the central opening of the piercing means, aspirating or dispensing liquid from or rather into the target via the disposable tip or fixed tip, and withdrawing the disposable tip or fixed tip from the target via the opening or via the central opening of the piercing means.
Higashihara et al. teaches dispensing liquids into containers.
In Higashihara et al. in view of Abe et al. and Hofmann it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to introduce the disposable tip or fixed tip at least partially into the target via the opening or via the central opening of the piercing means, aspirate or dispensing liquid from or rather into the target via the disposable tip or fixed tip, and withdraw the disposable tip or fixed tip from the target via the opening or via the central opening of the piercing means.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 8 obvious.
2. Claims 9-11 are rejected under 35 USC 103 as being unpatentable over Higashihara et al. in view of Abe et al. and Hofmann as applied to claim 1 and further in view of U.S. Patent No. 7,820,110 to Baumann et al.
I.) Regarding applicant’s claim 9, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 1 obvious from which claim 9 depends.
Claim 9 recites that the tool is a receptacle comprising a drip catcher.
Higashihara et al. in view of Abe et al. and Hofmann does not teach that the tool is a receptacle comprising a drip catcher.
Baumann et al. teaches a drip catcher that is used in conjunction with a pipette in an analytical instrument, in the form of a tray 24 (“receptacle”) as shown in Fig. 2. (column 4, lines 24-27)
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al. in view of Abe et al. and Hofmann to include a drop catcher as taught by Baumann et al. to catch drips and prevent contamination.
Therefore, Higashihara et al. in view of Abe et al.. Hofmann and Baumann et al. renders claim 9 obvious.
II.) Regarding applicant’s claim 10, as noted above Higashihara et al. in view of Abe et al.. Hofmann and Baumann et al. renders claim 9 obvious from which claim 10 depends.
Claim 10 recites traversing the second Z-rod such as to place the drip catcher of the receptacle beneath the fixed tip or disposable tip.
Higashihara et al. in view of Abe et al., Hofmann and Baumann et al. does not teach traversing the second Z-rod such to place the drip catcher of the receptacle beneath the fixed tip or disposable tip.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al. in view Abe et al. Hofmann and Baumann et al. to traverse a second arm (Z-rod) having a drip catcher such to place the drip catcher of the receptacle beneath the fixed tip or disposable tip to catch drips and prevent contamination.
Therefore, Higashihara et al. in view of Abe et al., Hofmann and Baumann et al. renders claim 10 obvious.
III.) Regarding applicant’s claim 11, as noted above Higashihara et al. in view of Abe et al.. Hofmann and Baumann et al. renders claim 10 obvious from which claim 11 depends.
Claim 11 recites traversing the second Z-rod in parallel movement to the movement of the first Z-rod such to continuously place the drip catcher of the receptacle beneath the fixed tip or disposable tip.
Higashihara et al. in view of Abe et al.. Hofmann and Baumann et al. does not teach traversing a second arm (Z-rod) in parallel movement to the movement of a first arm (Z-rod) such to continuously place the drip catcher of the receptacle beneath the fixed tip or disposable tip.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al. in view of Abe et al., Hofmann and Baumann et al. to traverses a second arm (Z-rod) supporting a drip catcher in parallel movement to the movement of a first arm (Z-rod) supporting a pipette such to continuously place the drip catcher of the receptacle beneath the fixed tip or disposable tip to catch drips and prevent contamination.
Therefore, Higashihara et al. in view of Abe et al., Hofmann and Baumann et al. renders claim 11 obvious.
3. Claims 12-16 are rejected under 35 USC 103 as being unpatentable over Higashihara et al. in view of Abe et al. and Hofmann.
Higashihara et al. teaches a robotic workstation includes apparatus for actuating one or more syringes.
The robot 27 includes arms that are movable along a horizontal track 401 corresponding to the X axis. Higashihara et al. teaches that the number of arms may vary, e.g., one, two or three. [0065] Thus providing for first, second, etc. arms that read on first and second Z-rods.
The arms are moved in a conventional manner in X- and Y-directions as well as allowing the syringes to move up and down. [0064] Users control the robot using a robotic control system (not shown), which typically includes software for both protocol development and execution). [0065]
Higashihara et al. teaches syringes, but not pipettes.
Abe et al. teaches a robot configured to move a dispenser for suctioning a liquid to be dispensed. (Abstract). Abe further teaches that pipettes and syringes are equivalent means to such and dispense liquids. [0044].
Therefore, Higashihara et al. in view of Abe et al. renders the use of pipettes equivalent to the use of syringes in Higashihara.
Higashihara et al. does not teach receiving by said second Z-rod a tool via an adapter attached to said second Z-rod, wherein said tool comprises a central axis and a working area, said working area being defined by a circle which center is located on the central axis of said tool and which radius being a distance between said central axis and a largest extension of an outline of the tool in a projection.
Hofmann teaches a pipetting positioning system that, as shown in Fig. 3D includes a centering device 14 provided with pipette needed 4, which centering device has four centering fingers 26 mutually opposing one another in pairs on its bottom side of the centering device, so that the centering fingers 26 are distributed uniformly over the periphery of the centering device 14. (column 10, lines 50-55). The centering device of Hofmann includes a central axis and a working area, the working area being defined by a circle which center is located on the central axis of the tool and the radius being a distance between said central axis and a largest extension of an outline of the tool in a projection.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al. in view of Abe et al. to includes a centering device (“tool”) on each of the first, second, etc. arms (Z-rods) as taught by Hofmann to contact the containers of Higashihara et al, to ensure proper alignment with the pipettes. Providing the centering devices on each arm would read on a first arm of Z-rod having a fixed tip (or the pipette) and a second arm or Z-rod having the centering device.
Moving the tool together with pipettes in Higashihara et al. to least partially overlap a “target” container would have been obvious.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to traverse first and second arms (Z-rods) such that the Z-axis of a first arm (Z-rod) and the working area of the respective centering device, as viewed in longitudinal direction of a first arm (Z-rod), at least partially overlaps a target area (container) comprised by a container operable by means the fixed tip or the disposable tip of the first arm (Z-rod).
Higashihara et al. in view of Abe et al. and Hofmann does not teach putting the centering device (“tool”) aside by the second Z-rod onto a docketing station.
It would have been obvious to one or ordinary skill in the art before applicant’s effective filing dates to modify Higashihara et al. in view of Abe et al. and Hofmann. to put the centering device aside by a second Z-rod onto a docketing station, when exchanging the contact member for a clean contact member or one of a different size.
I.) Regarding applicant’s claim 12, as noted above Higashihara et al. in view of Abe et al. and Hofmann teach all the elements of claim 12.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 13 obvious.
II.) Regarding applicant’s claim 13, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 12 obvious from which claim 13 depends.
Claim 13 recites that the tool comprises a downholding means, a piercing means or a receptacle.
Hofmann teaches that the conical bevels 34 of the centering device form together a holding-down device for a sample vessel. (column 11, lines 9-11)
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara, et al. in view of Abe, et al. to provide a pipette tip capable of piercing in view of the teachings of Hofmann. Such would allow for piercing a membrane sealing the wells to prevent crosstalk and carryover of fluid.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 13 obvious.
III.) Regarding applicant’s claim 14, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 12 obvious from which claim 14 depends.
Claim 14 recites that tool comprises a downholding means or a piercing means.
Hofmann teaches that the conical bevels 34 of the centering device form together a holding-down device for a sample vessel. (column 11, lines 9-11)
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara, et al. in view of Abe, et al. to provide a pipette tip capable of piercing in view of the teachings of Hofmann. Such would allow for piercing a membrane sealing the wells to prevent crosstalk and carryover of fluid.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 14 obvious.
IV.) Regarding applicant’s claim 15, as noted above Higashihara et al. in view of Abe et al. and Hofmann renders claim 13 obvious from which claim 15 depends.
Claim 15 recites that the tool comprises a downholding means or a piercing means.
Hofmann teaches that the conical bevels 34 of the centering device form together a holding-down device for a sample vessel. (column 11, lines 9-11)
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara, et al. in view of Abe, et al. to provide a pipette tip capable of piercing in view of the teachings of Hofmann. Such would allow for piercing a membrane sealing the wells to prevent crosstalk and carryover of fluid.
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 15 obvious.
V.) Regarding applicant’s claim 16, claim 16 recites a computer-implemented method for controlling at least one manipulator arm with at least two Z-rods of a pipetting system according to claim 12 according to the method of any one of claim 1.
Higashihara et al. teaches the use of a suitable controller (not shown) comprising a processor and associate hardware and software. [0083].
Therefore, Higashihara et al. in view of Abe et al. and Hofmann renders claim 16 obvious.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
On page 9 of applicant’s reply applicant argues that “the Examiner admits that Higashihara does not teach or suggest the claimed cooperative traversal of two distinct Z-rods such that a tool carried by one Z-rod has a working area positioned in the claimed geometrical relationship with the Z-axis of another Z-rod. (Office Action, p. 4).
On page 4 of the previous Office Action the examiner noted that it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Higashihara et al. in view of Abe et al. to includes a centering device (“tool”) on each of the first, second, etc. arms (Z-rods) as taught by Hofmann to contact the containers of Higashihara et al, to ensure proper alignment with the pipettes. Providing the centering devices on each arm would read on a first arm of Z-rod having a fixed tip (or the pipette) and a second arm or Z-rod having a centering device.
On page 10 of applicant’s reply applicant argues that Hofmann's centering device is described as a component installed to the end plate (12) (e.g., via threaded connection or bayonet socket), not as a tool designed to be repeatedly "picked up," "released," or "parked" by an automated arm during runtime.
Applicant’s claims do not recite that applicant’s tool is designed to be repeatedly "picked up," "released," or "parked" by an automated arm during runtime.
Also on page 10 of applicant’s reply applicant argues that there is no suggestion anywhere in Hofmann related to splitting the needle and centering tool assembly across two independently traversable Z-rods.
As noted above, the examiner has taken the position that it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to provide a centering device 14 having a pipette needle 4 as taught by Hofmann on each of the first, second, etc. arms (Z-rods).
Thus, each arm (Z-rod) would include its own needle and centering tool, so that needles and centering tools would be split across two independently traversable Z-rods.
On pages 10-11 of applicant’s reply applicant argues that Hoffman does not disclose any X or Y movement of the either the guide arm (6) or the needle (4) and that the Examiner provides no reasoning why one of ordinary skill in the art would be motivated to arrange centering device on one Z-rod and the needle 4 on another Z-rod.
As noted above, Higashihara et al. teaches that the arms (Z-rods) are moved in a conventional manner in X- and Y-directions as well as allowing the syringes to move up and down. [0064]
Further, as noted above by providing a centering device 14 having a pipette needle 4 as taught by Hofmann on each of the first, second, etc. arms (Z-rods) of Higashihara et al., each arm (Z-rod) would include its own needle and centering tool, so that needles and centering tools would be split across two independently traversable Z-rods.
On page 11 of applicant’s reply applicant argues the points about moving the tool together with pipettes in Higashihara et al. to at least partially overlap a 'target' container would have been obvious, and traversing first and second arms (Z-rods) such that the Z-axis of a first arm (Z-rod) and the working area of the respective centering device, as viewed in longitudinal direction of a first arm (Z-rod), at least partially overlaps a target area (container) comprised by a container operable by means the fixed tip or the disposable tip of the first arm (Z-rod).
In response, it is noted that the target area comprised by a target “operable by means of the second Z-rod” as recited in claim 1, does not exclude the alignment of the targe by a first Z-rod during operation of the pipetting system at some point in time.
Also on page 11 of applicant’s reply applicant argues the examiner’s position that it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to put the centering device aside by a second Z-rod onto a docketing station, when exchanging the contact member for a clean contact member or one of a different size.
The claims do no exclude an operator from physically/manually removing the centering device from any of the arms (Z-rods) and positioning the centering device in a docketing storage location when not in use or being exchanged or another centering device.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S. GZYBOWSKI whose telephone number is (571)270-3487. The examiner can normally be reached M-F 8:30-5:00.
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/M.S.G./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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